Barnes & Noble, GE, Komen, ReDigi: Intellectual Property

Tuesday, February 7th 2012. | Gadget News

Barnes & Noble Inc. should win a patent-infringement case brought by Microsoft Corp. that threatens to halt imports of the bookseller’s Nook e-reader, according to staff of the U.S. trade agency hearing the dispute.

Jeff Hsu, a staff attorney at the U.S. International Trade Commission, said yesterday in an interview he is recommending that ITC Judge Theodore Essex find there was no violation by Barnes & Noble of three Microsoft patents. The recommendation came in a trial beginning yesterday in Washington.

Barnes & NobleEssex is scheduled to release his findings April 27, and a decision in Microsoft’s favor could lead to a ban on imports of Nook readers made outside the U.S. The staff acts as a third party in the case, and there’s no requirement that the judge follow the recommendation.

The case is part of a strategy by Redmond, Washington-based Microsoft to push Barnes & Noble into paying patent royalties for the Nook, which runs on Google Inc.’s Android operating system. Microsoft claims all Android devices use its technology and has said it collects fees on 70 percent of Android smartphones in the U.S.

Barnes & Noble, based in New York, denies infringing the patents, and contends they are invalid because they don’t cover new inventions. The three patents apply to a way to select text to make it larger or smaller; a way to put highlights or footnotes on copyrighted documents; and faster downloading of text from Web pages that have background images.

The company has refused to pay Microsoft and complained to the government about its adversary’s tactics. Microsoft “uses these patents to demand that every manufacturer of an Android- based mobile device take a license from Microsoft and pay exorbitant licensing fees,” Barnes & Noble said in a trade commission filing.

Essex has thrown out the patent misuse claim, leaving only the question of whether the patents are valid and have been infringed.

The trade agency has the power to block imports of products that infringe U.S. patents. The Nook is made in Asia, and Microsoft is counting on the threat of the reader being stopped at the border to force Barnes & Noble into a licensing deal.

Barnes & Noble said Microsoft first approached it two years ago about an agreement, and in meetings and e-mail exchanges that began in July 2010, Microsoft contended that its patents had the power to block Android devices. The bookseller said in an ITC filing that Microsoft was demanding “shockingly high licensing fees” and requirements that would have limited Barnes & Noble’s ability to upgrade its Nook devices.

Amazon.com Inc., whose Kindle reader is the Nook’s top competitor, has a license with Microsoft for at least one of the patents in the case, Microsoft said in its March 2011 complaint. That filing occurred before Seattle-based Amazon.com introduced its Kindle Fire, which also runs on a version of Android.

The case is In the Matter of Certain Handheld Electronic Computing Devices, 337-769, U.S. International Trade Commission (Washington).

For more patent news, click here.

Trademark

GE, Microsoft Trademark Filing Tips Hand for Joint Venture Name

General Electric Co. and Microsoft Corp., who said in December they would form a joint health-care management venture, have together filed five applications to register “Caradigm” as a trademark, according to the database of the U.S. Patent and Trademark Office.

The applications, all filed Jan. 24, specify a range of uses including “medical apparatus featuring enhanced management of medical records and data;” repair and installation or computer hardware and software for managing medical records; “consulting services for improving dataflow, workflow and business practices” for medical institutions; computer software for managing medical records; and “telecommunication services; electronic data interchange services for health-care transaction information.”

There is one issued and canceled registration for “Caradigm.” That trademark was registered by the Foundation of Santa Barbara Regional Health Authority Inc., and canceled in October 2010.

Gun Dealer Says Komen Foundation Didn’t Authorize Pink Handguns

A Seattle-based gun dealer that produced a pink handgun has issued a statement saying that it never had a partnership with the Susan G. Komen for the Cure Foundation.

Discount Gun Sales LLC said it produced the pink Walther P22 “Hope” edition with the intention that a portion of the sales price be donated to the foundation. “Discount Gun Sales and Komen are ‘teammates’ only in the sense that we support cancer research,” the company said in its statement.

The Dallas-based foundation, which had been under fire for its decision — later rescinded — to de-fund breast-cancer screening conducted by Planned Parenthood, doesn’t have a sponsorship relationship with any company in the firearm industry, Discount Gun Sales said in its statement.

As a result, although the company will still devote a portion of the sale price of its pink gun to cancer research, the donation will be made to the American Cancer Society instead.

The company’s first run of pink guns was sold out, and Discount Gun Sales said it will produce a second run, to be limited to 250 units, selling for $449.99, with $50 of each sale to be donated.

Over the years, the foundation has teamed up with many entities that have created pink-themed merchandise as part of a campaign to build breast-cancer awareness and generate funds for breast-cancer research.

One of the foundation’s 14 trademarks or pending applications is for “Passionately pink for the cure a program of Susan G. Komen for the Cure,” according to the database of the U.S. Patent and Trademark Office.

Ohio Traffic Stop Nets Counterfeit Baseball Cap Seizure

More than 3,000 baseball caps bearing fake trademarks were seized at a traffic stop near Vermillion, Ohio, the Morning Journal newspaper reported.

The caps bore counterfeit versions of marks belonging to the National Football League, the National Basketball Association, Major League Baseball, Ohio State University and Monster Energy Drink, according to the newspaper.

Police arrested the driver, an Ohio resident who was stopped for a marked lanes violation, and charged him with trademark counterfeiting, the Morning Journal reported.

The driver was arrested after police noticed the stacks of baseball caps in the car, according to the newspaper.

For more trademark news, click here.

Copyright

Capitol Records Asks U.S. Judge to Shutter ReDigi Sale Site

Capitol Records, a label set to be acquired by Vivendi SA, asked a federal judge to shut a new online music service that allows users to sell digital songs they’ve bought.

Capitol, which is now part of EMI Group, said at a hearing yesterday in federal court in Manhattan that the service, ReDigi Inc., infringes copyrights to its songs by allowing unauthorized copying of digital music files. Capitol seeks a preliminary injunction ordering ReDigi to shutter its service.

U.S. District Judge Richard Sullivan in Manhattan is also scheduled to consider ReDigi’s request that he dismiss the case.

Lawyers for Cambridge, Massachusetts-based ReDigi argued against the injunction, saying the company doesn’t make unauthorized copies of songs.

EMI is the fourth-largest recording company in the world. New York-based Citigroup Inc. acquired EMI when the former owner, Terra Firma Capital Partners Ltd., defaulted on bank- issued debt. Paris-based Vivendi’s Universal Music Group, the largest record company, agreed in 2011 to buy EMI’s recording unit for 1.2 billion pounds ($1.89 billion). The purchase awaits regulatory approval.

Capitol claimed in its suit, filed Jan. 6, that ReDigi allows users to upload song tracks to its site where buyers may download them for about 79 cents apiece. ITunes charges 99 cents for most songs and music companies take about 70 cents from each transaction.

The labels receive no revenue from a ReDigi sale, according to Capitol’s complaint. ReDigi takes a fee of as much as 15 percent of each download, according to the complaint. The user who uploaded the song collects the rest.

ReDigi said in court papers that it is protected from liability by the first-sale doctrine, which allows individuals who lawfully purchase music to sell it to whomever they wish.

Capitol said the item being sold is a digital copy, and not an original song acquired on iTunes. Capitol is seeking damages of as much as $150,000 for each song infringed.

The judge on Feb. 1 denied a request by the online search company Google Inc. to file a friend-of-the-court brief opposing the injunction.

The case is Capitol Records v. ReDigi, 12-cv-95, U.S. District Court, Southern District of New York (Manhattan).

For copyright news, click here.

IP Moves

Dinsmore & Shohl Expands IP Practice With Trademark Specialist

Dinsmore & Shohl LLP hired Karen Gaunt for its IP practice group, the Cincinnati-based firm said in a statement.

Gaunt, a trademark and copyright specialist, joins from Wood Herron & Evans LLP, also of Cincinnati.

In addition to representing Procter & Gamble Co., Gaunt has handled trademark matters for brand owners in the home audio systems, banking, luxury eyewear, music, health-care and toy industries.

She has an undergraduate degree in English and history from Denison University and a law degree from the University of Cincinnati.

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